Ex Parte Tran et al

Patent Trial and Appeal Board

Oct 31, 2013

11276586 (P.T.A.B. Oct. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/276,586 03/06/2006 Vinh Tran 00008-0030-02000 3387
114629 7590 10/31/2013
BOOKOFF McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20036
EXAMINER
CHEEMA, UMAR
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
10/31/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VINH TRAN, BRIAN SULLIVAN,
HARRY G. MORGAN, and RONALD HOWARD
____________________

Appeal 2011-006413
Application 11/276,5861
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 6, 2006, which is a continuation of and claims
benefit of U.S. Application No. 09/750,027, filed Dec. 29, 2000, which in
turn claims benefit of U.S. Provisional Application No. 60/234,996, filed
September 25, 2000. The real party in interest is AOL, LLC.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-5, 9-14, and 21-29. Claims 6-8 and 15-20
have been canceled (App. Br. 1.)2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns systems, machine-readable
media, and methods for providing (making available) electronic information
to a requestor based on previous request for related “non-electronic”
information. (Spec. 1:9-10; 1:21-2:24; 3:24-4:17; Abstract.)
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A method for making electronic information more
readily available to one or more access requestors, the method
comprising:
identifying for transport electronic information stored at a
data source;
transporting the identified electronic information from
the data source to a requesting access requestor;
anticipating, using a processor, a demand of the access
requestors for access to the electronic information based at
least on past requests for access to related non-electronic

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed September 30, 2010; and Reply Brief (“Reply Br.”) filed February 16,
2011. We also refer to the Examiner’s Answer (“Ans.”) mailed December
17, 2010.
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information that is related to the electronic information, that is
not particular to any single access requestor, and that is
different from the electronic information;
determining, based on the anticipated demand, to store
the already identified and transported electronic information on
a storage medium that is more accessible to the access
requestors than the data source; and
storing the transported electronic information on the
storage medium.
Rejection on Appeal
The Examiner rejects claims 1-5, 9-14, and 21-29 under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent. No. 6,324,182 B1, issued
Nov. 27, 2001 (filed Mar. 11, 1999) (“Burns”), U.S. Patent. No. 6,622,168
B1, issued Sep.16, 2003 (filed Nov. 24, 2000 claiming benefit of U.S.
Provisional Application No. 60/195,806, filed on Apr. 10, 2000) (“Datta”),
and U.S. Patent. No. 6,578,068 B1, issued Jun. 10, 2003 (filed Aug. 31,
1999) (“Bowman-Amuah”).

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that the combination of Burns,
Datta, and Bowman-Amuah collectively teach or would have suggested
“anticipating, using a processor, a demand of the access requestors for
access to the electronic information based at least on past requests for access
to related non-electronic information that is related to the electronic
information, that is not particular to any single access requestor, and that is
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different from the electronic information” within the meaning of claim 1 and
the commensurate limitations of claims 28 and 29?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed January 25, 2010 as our own, except as to those findings that
we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (App. Br. 3-5), we select
independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1-5, 9-14, and 21-29. 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).
Appellants contend that Burns, Datta, and Bowman-Amuah do not
teach or suggest the disputed features recited in claim 1. (App. Br. 3-5;
Reply Br. 1-7.) Specifically, Appellants contend that “[a]lthough the Bums
system schedules delivery of web pages based on patterns of requests to the
web pages, the Burns system does not schedule delivery of web pages based
on past requests for access to non-electronic information.” (App. Br. 3.)
Appellants also contend that “[a]lthough Datta describes a preloader that
manages a cache of web page components, the Datta preloader does not
manage the cache of web page components based on past requests for access
to non-electronic information” (App. Br. 4.) Appellants further contend
that Bowman-Amuah also does not describe anticipating access based on
past requests for access to non-electronic information, but instead describes:
a system [ ] for distributing incoming requests from a user
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interface amongst a client and server components for
optimizing usage of resources, where incoming requests are
first received and stored by an activity module, then the activity
module instructs a client to handle a first subset of the requests
and passes a second subset of the requests on to a “utilization-
based load balancer.”
(App. Br. 4.)
The Examiner sets forth a detailed explanation of the obviousness
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
3-14), and in particular claim 1 (Ans. 3-6, 12-14). Specifically, the
Examiner provides an interpretation of “non-electronic information” (Ans.
13) and provides a detailed explanation with respect to Burns’ disclosure of
scheduling frequently requested content based on, inter alia, the time of day
and Bowman-Amuah’s disclosure of delivering request based on utilization
and routing requests through an activity module. (Ans. 3-6, 12-14 (citing
Burns, col. 8, ll. 41-59; col. 9, ll. 12-34; Figs. 2, 3, 6 and Bowman-Amuah,
col. 2, ll. 18-33; Abstract).) From these findings, the Examiner concludes
that Burns, Datta, and Bowman-Amuah render Appellants’ claim 1 obvious.
(Ans. 3-6, 12-14.) We adopt these findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that Burns,
Datta, and Bowman-Amuah teach or would have at least suggested the
disputed features of claim 1. Accordingly, we sustain the Examiner’s
rejection of claim 1 for the reasons set forth in the Answer, which we
incorporate herein by reference. (Ans. 3-6, 12-14.) Our additional analysis
will be limited to the following points of emphasis.

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We initially note that the argued limitations fail to distinguish the
claimed invention from the prior art either structurally or functionally.
Specifically, the recited features argued by Appellants – “anticipating . . . a
demand of the access requestors for access to the electronic information
based at least on past requests for access to related non-electronic
information that is related to the electronic information, that is not particular
to any single access requestor, and that is different from the electronic
information” (claim 1, emphasis added) – essentially consist of non-
functional descriptive material – i.e., data. Appellants merely attempt to
distinguish the claim by the content of the “non-electronic information” –
i.e., the data utilized by the unclaimed process/algorithm to “anticipate”
(predict) demand. However, the content of the “non-electronic
information” does not change the functionality of the claimed process
(method). The recited functionality of the claim limitation – “anticipating”
demand remains the same regardless of what the data constitutes, how the
data may be named, or the relationship among the data and do not further
limit the claimed invention either functionally or structurally.
The informational content of the data thus represents non-functional
descriptive material, which “does not lend patentability to an otherwise
unpatentable computer-implemented product or process.” Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No.
2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in
databases and communicated on distributed network did not functionally
change either the data storage system or the communication system used in
the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
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2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-functional descriptive
material).
Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner (Ans. 13), “the claimed ‘non-electronic
information’ is broadly recited, and is not limited by the claim language or
explained in Appellants’ specification regarding any specific mechanics. At
best, the claimed ‘non-electronic information’ . . . is interpreted as any
‘electronic information’ other than Appellant’s claimed ‘electronic
information.’” Appellants do not explicitly define “non-electronic
information” either in their Specification or the claim. After a thorough
review of Appellants’ Specification, we agree with the Examiner’s
interpretation of “non-electronic information” as being data that is related to
but different from the “electronic information” which is the object of the
anticipated demand. This broad but reasonable construction is consistent
with Appellants’ Specification (Spec. 3:24-4:17), which describes such
information as being feedback from requestors, survey research, topics of
interest, hobbies, etc. We further note that any data/information utilized by a
processor must be electronic information in its final processed form.
Even if we narrowly interpret, which we do not, the disputed “non-
electronic information” as originating in non-electronic form (non-electronic
data), such as user input or feedback, both Burns and Bowman-Amuah
describe such data. Burns determines usage patterns (anticipates demand)
based on the time of day and operator input (Burns, col. 8, ll. 53-59; col. 9,
ll. 12-34). Bowman-Amuah describes servicing information requests
utilizing non-electronic criteria – routing through an activity module to a
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load balancer based on server utilization. (Bowman-Amuah, col. 2, ll. 18-
24).
Thus, Appellants do not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1, independent
claims 28 and 29, and dependent claims 2-5, 9-14, and 21-27 (dependent on
claim 1), not separately argued with particularity. (App. Br. 3-5.)
Accordingly, we affirm the Examiner’s obviousness rejections of claims 1-5,
9-14, and 21-29.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-5, 9-14, and 21-29 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-5, 9-14, and 21-29.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh